Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Neil J. Wilkof, Annsley Merelle Ward, Nicola Searle, Eleonora Rosati, and Merpel, with contributions from Mark Schweizer. Read, post comments and participate! E-mail the Kats here

The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Friday, 30 July 2004

The International Herald Tribune reports that French internet service providers have agreed to co-operate in attempts to thwart illegal music downloaders. ISPs Free, Noos, Club-Internet, Wanadoo and Tiscali France signed a government-backed charter, together with recording companies and musicians’ groups, undertaking to cut off or suspend the internet access of pirates. Although such steps will only be after a court order is procured, the agreement calls on music companies to bring targeted civil and criminal lawsuits. They have also agreed to send warnings to individual customers if the rights-holders so request. The ISPs hope that if they co-operate at this stage, they will be able to avoid legislation such as the US DMCA, which holds ISPs who fail to remove copyright material posted by their users at the rights-holder’s request, financially liable. If the charter is a success, the arrangement could be rolled out to film downloads.

The IPKat thinks that the willingness of French ISPs to co-operate with copyright holders stands in marked contrast to the attempts by US ISPs to argue that it would be a breach of internet users’ privacy rights for the ISPs to hand over their personal details.

The Community trade mark (CTM) system is a game that can be played in many different ways. The IPKat has long suspected that anyone who looks at OHIM Board of Appeal decisions in opposition proceedings will discover a curious imbalance of national interests. Now he knows that he is right. Earlier this month he persuaded a student to review no fewer than 400 decisions of the Boards of Appeal between 26 May and 30 June 2004. Of the 400 opposition appeals reviewed, 124 of them were filed by German opponents, counting for 31% of the total. A further 109 (that's more than 27%) came from Spanish opponents. Major trade mark owning countries such as the United States (35, or 8.75%), France (32, or 8%) and the UK (17, or 4%) appear quite inactive in comparison.

The IPKat wonders why this imbalance should exist, particular with regard to the frequency with which CTM oppositions are filed by the Spanish, a smaller economy than Germany. Various explanations exist. For example:

* The Spanish are far more alert to threats to their earlier rights;
* The Spanish own far more prior rights than other nationalities and therefore have more to protect;
* The Spanish have made a business out of filing marks they have no genuine entitlement to, for their nuisance value in CTM oppositions in which they get "bought out" by applicants anxious for European coverage;
* The Spanish profession file oppositions without having taken instructions from the clients and then seek to persuade their clients to accept what they've done.

What, the IPKat asks, do you think? What is indeed the true explanation of this unusual imbalance?

File your Spanish trade mark hereSpanish brands here, here and -- if you can take the heat -- here

In Sandoz GmbH v Roche Diagnostics GmbH, decided Thursday by Mr Justice Patten and noted on the useful All England Direct subscription-only service, Roche owned a patent relating to ways in which injectible liquid formulations ("parenterals"), which had proteins as their active ingredient, could be effectively preserved when prepared for multi-dose application. The patent claim specified the use of three particular antimicrobial preservatives, either alone or in combination, at a concentration of up to 2% in the solution. Roche later applied to amend its patent in order to restrict the claims to formulations which contained just one particular protein (erythropoietin) and which utilised a combination of two or more of the three specified preservatives rather than any one of them singly. Sandoz objected, maintaining that the amended claims did not disclose any inventive step. It sought the revocation of the patent for obviousness, on the grounds of common knowledge and prior art.The court had to decide whether the process set out in the amended claims involving the combination of low concentrations of two or more of the three selected preservatives was obvious at the priority date.

Patten J dismissed the claim. For something to be obvious to try, the court had to be satisfied that the skilled addressee would have tested it as something which held out a prospect of producing valuable results. He was not taken to be someone who carried out trials for the sake of doing so: what had to be shown was that the skilled addressee didn't think the likelihood of success was certain but that it was at least worth trying. On the evidence, Sandoz's contentions as to obviousness were not made out.Accordingly, the action for revocation of the patent would fail.

The IPKat thinks this is a particularly clear exposition of the notion of "obvious to try" as a parameter for the measurement of inventive step.

Thursday, 29 July 2004

The BBC reports on a pork pie panic that is gripping Leicestershire. The people of Melton Mowbray, led by local councillor Matthew O’Callaghan, are keen to see the Melton Mowbray pie protected as a geographical indication under the EU regime. They argue that the pie, with its biscuity crust, grey-tinged meat and crooked sides should be protected because
"This is intellectual property…It's part of our food heritage. And it should belong to the people that made it."
The move is being driven by a group of seven manufacturers of the pie. However, other UK pie-producers aren’t happy. Northern Foods, which makes “Melton Mowbray” pies in Shropshire and Wiltshire, argues that the term merely refers to a style and quality of product and points to the fact that it has been making “Melton Mowbrays” for 100 years. Northern Foods initially threatened to bring the matter to court. However, DEFRA has agreed to take a second look at the application for protected status.
The IPKat isn’t really an expert on pork pies, but he does know that it can’t be assumed that a product indication is worthy of geographical indication status just because it coincides with the name of a geographical region. Many recipes that started off in single places have spread in popularity and are now produced in other locations. To “claw back” such product names could have dire effects on competition. Melton Mowbray may not be an example of such a “claw back though”. The IPKat waits to see what the UK Government has to say.

This from Ananova: New York subway users could soon be riding to Sony Times Square or Nike Grand Central, if sponsorship plans currently being considered are implemented. IOL, quoting the New York Times, says the Metropolitan Transportation Authority is not ruling out station sponsorship as it asks marketing companies to develop sponsorship opportunities. Executive director Katherine Lapp said:

"It's our job to figure out other ways to add revenue. Every dollar we get from these types of sources is one dollar more we don't have to take in fares or tolls."

But reactions to the idea have been varied. East Village resident Wesley Hatan told the paper:

"They'll get us used to branded subways, and next will be 'the Statue of Liberty, brought to you by Microsoft'."

The IPKat is not surprised at this branding idea. New York's subways have been covered in copyright-protected graffiti for long enough; it's time they exploited brands and trade marks too.

Wednesday, 28 July 2004

Here's some snappy journalism from The Reporter: an analysis by Andrew Orlowski of the deal struck between Apple and Motorola which will allow "severely crippled" versions of iTunes to be played on Motorola phones. Orlowksi describes this as a triumph for DRM ("digital rights management") as well as being a mastepiece of diplomacy.

The IPKat is in awe of the ever-increasing number of ways in which copyright-protected works can be delivered to customers, each generating further marketing opportunities for copyright owners. Whoever said copyright is dead?

Tuesday, 27 July 2004

Spotted by the IPKat - the world's most unlikely branding exercise: Ben & Jerry's ice-cream sponsor the World Toe Wrestling Championships. See further. There's a prize for anyone who can find a stranger branding combination.

The BBC reports that Real has produced software that allows users of iPod devices to play music made available by other providers. Previously iPod’s FairPlay software only allowed music provided by Apple to be played on iPods. However, Real’s Harmony program will check the music device the tune is to be played on and will change its format if necessary. The company claims that it is not infringing Apple’s IP rights in the FairPlay DRM software because it mimics that software. Apple had not comment to make on the issue.

The IPKat notes that while the law protects DRM systems, there is a lot to be said for allowing players to be compatible with downloads from other sources. He wonders whether engineering players so that they only play music from the manufacturer of the players could be seen as being anticompetitive.

UPDATE: Apple has accused Real of "hacker tactics" and says that it will be looking closely at whether Real's developments are compatible with the DMCA. It has also warned consumers that when it updates its iPods, the machines are likely to become incompatible with the Harmony program. See further here.

The Thomson-owned LAWTEL subscription-only site offers this today: Mars UK Ltd v Burgess Group plc, another decision of Mr Justice Lloyd last Monday (judgment not yet available). Mars produced the WHISKAS range of cat food, for which it owned Community and UK trade marks. The product in issue in this case was a dried cat food in resealable, mainly purple bags that bore the word WHISKAS on a cat mask design. Burgess recently launched its own SUPA CAT dried cat food, in maroon bags bearing the word BURGESS. Mars' product were sold in supermarkets, while those of Burgess were sold only in pet shops. Mars alleged that Burgess was passing off its product as being associated with Mars and that its product infringed its trade marks. Burgess disagreed, mainting that neither the get up as a whole nor the colour purple represented to the public that its product was closely associated with Mars.

Lloyd J refused to grant interim injunctive relief. Fatal to Mars' case was the fact that, in the absence of evidence of confusion at this stage, Mars had not shown a seriously arguable case that Burgess' packaging would be taken by shoppers as associated with Mars. Basically, WHISKAS was sold under the name WHISKAS, while Burgess' product was in a different coloured bag and bore the names BURGESS and SUPA CAT. Both parties' products were so large that differences would not escape a shopper's notice and no reasonably alert customer with reasonable eyesight would associate the one with the other. While there were some superficial similarities, the differences -- especially in the colour itself, its amount and layout, were more significant.

The IPKat notes that the relevant consumer, in the case of cat food, is the person who buys it and not the cat who eats it. More to the point, this case raises an important point concerning the comparison of colour. There will be many for whom purple and maroon are quite different colours, but many also -- including those who suffer from varying degrees of colour-blindness, who cannot distinguish them at all or at least find them quite similar.

Monday, 26 July 2004

This from the BAILII website: in Société des Produits Nestlé SA v Mars UK Ltd [2004] EWCA Civ 1008, Nestlé, who manufactured POLO mints, applied to register as a trade mark in Class 30 in respect of ‘sugar confectionery’ a sign which was graphically represented in a black and white photograph of a three-dimensional shape, which was the familiar shape of a Polo mint, but with the word ‘Polo’ embossed on it. No particular colour or size was claimed in the application. Mars opposed this application on the grounds that the sign was devoid of distinctive character and was used by other traders in the UK.

The hearing officer rejected the objection and held that, so long as (i) the specification was limited to ‘mint flavoured compressed confectionery’; (ii) the sign was limited to the colour white and (iii) the sign was limited in size to that of the standard Polo mint, the sign had acquired a distinctive character through use in the UK. Finding that the application for registration could only proceed subject to those three requirements, he invited Nestlé to amend its application accordingly. Both Nestlé and Mars appealed: Mars argued that the Registrar had no power to permit Nestlé to amend its application at all. Mr Justice Lloyd agreed, whereupon Nestlé appealed.

The Court of Appeal dismissed Nestlé's appeal. First, it held that a requirement that the elements of colour and size should be included in the mark in order to make it distinctive and therefore registrable did not fall within the provisions in s.13(1) of the Trade Marks Act 1994 that the applicant

"might agree that the rights conferred by the registration shall be subject to a specified … limitation".

The required inclusion of the colour and size elements was not a specified limitation on "the rights conferred by the registration" of the mark identified in the application. Nor did the requirements of colour and size limit ‘the rights’ which could have been acquired on registration without including them. The requirements related to the inclusion of essential ingredients in the content of the mark in order to make it distinctive, thus satisfying the requirements for registration of the mark and thereby obtaining the rights conferred by it. Secondly the restriction of the application to ‘mint flavoured compressed confectionery’ was a permissible restriction of goods, but the requirements as to colour and size of the mark were not. The requirements of colour and size did not restrict ‘the goods’ covered by the application for registration of the mark. The requirements restricted the mark itself to that which distinguished the goods covered by the application from the goods of other traders.

The IPKat heartily concurs with the Court of Appeal's decision. The extent to which a trade mark applicant is invited to amend his application in midstream is the extent to which actual or potential opponents can be wrong-footed.

Pravda reports that the leader of the Russian rock group, Leningrad, had won his copyright case against a record company, SBA Music Publishers. The company sold the right to use adaptations of Leningrad’s music for mobile phones to mobile phone companies without the permission of the leader of the group, Sergei Shnurov. Although he failed to recover the $40,000 damages he was seeking, Shnurov is said to be happy with the result.

The IPKat wouldn’t be surprised if we see more copyright cases involving the lucrative area of mobile phone ringtones in the near future. He also asks that if anyone has access to a transcript of the case, could they please send it to theipkat@yahoo.co.uk.

More of Leningrad’s contribution to the world of music Visit Leningrad here More Russian ringtones here and here

Sunday, 25 July 2004

The Sunday Telegraphreports that Kimberly-Clark has developed an anti-bacterial tissue that, the corporation claims, kills 99.9% of cold and flu viruses in minutes. The Kleenex Anti-Viral wipe, which goes on sale this autumn, is intended to prevent the spread of such viruses rather than relieve the painful symptoms.
This is how it works: the middle layer of the three-ply tissue is treated with chemical ingredients that are said to destroy almost all viruses within 15 minutes. The active ingredients are already found in many household products: they are citric acid, which flavours fizzy drinks, and sodium lauryl sulphate, a detergent in most shampoos and toothpastes. Together, however, they are a deadly anti-viral formula. Dr Winkler Weinberg, a spokesman for Kleenex and author of No Germs Allowed!, said:

"This is an incredible breakthrough. We're attacking the most common viruses known to man and the single biggest cause of employee absenteeism."

Although anti-bacterial products are common, Kleenex claims that this is the first anti-viral product. However, some scientists have warned that such products could weaken people's immune systems and encourage the evolution of resistant germs. The company is confident that the anti-viral tissue will not cause new viruses to develop.

The product will go on sale in America in October, with a $30 milllion marketing drive. Kimberly-Clark will monitor its success before launching in Britain, probably next year. Peter Openshaw, a professor of virology at Imperial College London, said that he would not be persuaded to buy it.

"I accept that it kills 99.9% of viruses, but the makers have no evidence that it stops the spread of colds. How many people catch colds through dirty tissues? Perhaps if you blew your nose, kept the dirty tissue in your pocket and then wiped your child's face with it - but that seems a bit extreme. The tissue won't sterilise the air, or hands or faces. In one sneeze there can be 40,000 droplets and strings of mucus. If you held up a tissue you could deflect some of them back on to your face, I suppose, but not all."

The market for tissues has grown by 35% since 1994 and is now worth £185 million a year. It is dominated by Kleenex, which holds a 50% market share.

The IPKat notes that the strength of the Kleenex brand is so strong that Kmberly-Clark doesn't need to sub-brand this product, simply tagging the purely descriptive phrase "Anti-Viral" behind the KLEENEX trade mark. He also reminds readers that in Europe there is no inventive step problem in patenting the use of a combination of known products (in this case citric acid and sodium lauryl sulphate) where the effect of the combination is not something that could be predicted.

Friday, 23 July 2004

The IPKat is grateful to the BBC for giving him the chance to combine two of his greatest passions: intellectual property and ice-cream, for this year marks the hundredth year of the ice-cream cone. The story goes that it was first served in the St Louis World’s Fair in summer 1904. However, there’s a good old IP controversy to go with your Ninety-Nine. It seems that Italo Marchiony was granted a US patent the year before for an invention that was related “to molding apparatus, and particularly such molding apparatus as is used in the manufacture of ice-cream cups and the like." He used waffles in the molds because people failed to return his cups. Even earlier, in 1902, an English patent was granted for “Apparatus for Baking Biscuit Cups for Ice Cream." However, some have argued that the beginnings of the cone can be traced to the early 19th Century.

The thought of IP protected ice-cream will enhance the IPKat’s enjoyment of the delectable confection even more.

The United Kingdom has amended its existing patent law in an effort to deter “unreasonable” infringement suits and encourage out-of-court settlements. The new Patents Act, which amends the Patents Act of 1977, was passed by the House of Lords on Thursday. The bill was previously introduced to and passed by the House of Commons. While the law does not change the standard of patentability, it modifies existing protection for alleged infringers to encourage out-of-court settlement of disputes while still deterring patent owners from making unreasonable allegations of infringement. The amended provisions enable the Patent Office to provide an independent non-binding opinion on patent validity or infringement to settle disputes over patent rights without parties having to resort to expensive litigation. Moreover, the law aims to bring U.K. patent law into line with the revised European Patent Convention to reduce bureaucracy and make it simpler for U.K. businesses to operate across Europe, according to the U.K. Patent Office. The European Patent Convention (EPC), which establishes the European patents system, was revised in 2000 and the bill will bring about changes to UK patents law that are necessary if the UK is to remain a member of the Convention, the Patent Office said. Current UK patent law is provided by the Patents Act 1977, one of the main purposes of which was to reform the law of patents in the U.K. to bring it into line with the EPC which was agreed in 1973. The Department for Trade and Industry and the Patent Office, an executive agency of the DTI, consulted widely on the changes during 2003.

As soon as he read this, the IPKat zoomed across to the UK Patent Office's website -- while was sadly silent on this topic. The Office's special web section on the Bill was last updated on 20 April 2004.

Mr Justice Lewison gave judgment yesterday in Ultraframe (UK) Ltd v Eurocell Building Plastics Ltd and another, [2004] EWHC 1785 Ch, a grippingly complex saga of patents and unregistered design rights. Ultraframe owned a patent relating to the design of conservatories. Eurocell were the distributors of the Ultralite 500 modular system produced by Ultraframe under its patent. In 2002, however, they began to make and sell a competing system, Pinnacle 500. Ultraframe sued, alleging that the Pinnacle 500 infringed both its patent and its design rights in the Ultralite 500. Not so, said Eurocell: the Pinnacle 500 fell outside Ultraframe's patent claims and, even if it didn't, the patent was invalid. What's more, Eurocell complained, the Ultralite 500 design was not only commonplace but also fell within the 'must fit' and 'must match' exceptions to design right under s.213(3)(b) of the Copyright, Designs and Patents Act 1988.

The good news for Ultraframe was that its patent was valid, as was its unregistered design right. Granted patents are presumed valid unless sufficient evidence is adduced to rebut that presumption, which Eurocell hadn't managed to so. The bad news, through, was that its patent hadn't been infringed. But good news was to come: its unregistered design right had been infringed.

The IPKat notes that, like all good trial judges in patent infringement proceedings, Lewison J applied the classic test of non-exact patent infringement in Improver Corporation v Remington Consumer Products Ltd [1990] FSR 181. The House of Lords is currently reviewing patent infringement tests in the Amgen case. The Improver test looks sure of a good, clean bill of health since its author, then Mr Justice Hoffmann, is now Lord Hoffmann who (the IPKat's impeccable source assures him) took an extremely active role in the Amgen hearing.

The IPKat has received a request from a damsel in distress who wants to bring a claim for unregistered design right infringement and passing off. Her questions are simple, but the answers are somewhat elusive: (i) is it possible to bring a passing off or unregistered design claim before an English small claims court and (ii) if so, how on earth does one get started? If you know the answer, please let the IPKat know by email, which will be forwarded to our anxious damsel. Alternatively, just post your comment below.

Thursday, 22 July 2004

* "Embryonic Cell Patenting" by Dr Philip M. Webber (Frank B. Dehn & Co);
* "The Right Treatment? A New European Regulatory Regime for Pharmaceuticals" by Isabel Britton and Michael Gavey (Linklaters);
* "From GATT to G.A.T.T. -- 50 Years of European Bio-IP", Part I, by Margaret Llewelyn (University of Sheffield).

The BioSLR is always on the look-out for leading edge articles in the field of biscience, particularly from the intellectual property point of view. If you are thinking of submitting an article for publication, contact Nick Gingell.

The Daily Telegraph reports that the British Technology Group (BTG) is suing Microsoft and Apple for patent infringement in northern California. It claims that the big guys have infringed a patent for online software updates owned by one of its subsidiaries. It is also suing Microsoft in relation to other technology used in the Windows operating system.

The IPKat waits to see what will happen next in this latest David v Goliath battle.

Get your online updates here (while you still can).
More apple wars here

Stop press: this has come from the European Commission today. Comments in colour are from the IPKat.Copyright: Commission launches consultations on fine-tuning of legislationThe European Commission has launched consultations on simplifying and fine-tuning existing EU legislation on copyright and related rights. The consultations, open until 31 October 2004, are based on a Commission working paper which suggests that current EU copyright legislation is generally effective and consistent, but would benefit from some improvements. The IPKat says: most current copyright legislation has focused on those areas that are most easily harmonised, such as software protection, duration of copyright term, rental and lending right, satellite transmission and database protection, but its attempts to address live contemporary issues through its information society directive (directive 2001/29) have been heavily cricitised. No attempt has yet been made to harmonise major problem areas such as what actually constitutes a literary, dramatic, musical or artistic work.The Commission would take into account the results of the consultations before proposing legislative amendments within the next year or so. The review of the existing Directives is in line with the Commission’s Better Regulation Action Plan. For the full text of the working document, see here. Internal Market Commissioner Frits Bolkestein said:

“Seven copyright Directives have been adopted over ten years. We need to make sure the early Directives are consistent with the more recent ones. This type of nuts and bolts work makes a real difference to how EU law works on the ground and we owe it to rights holders and content users, including consumers, to make this important body of EU law as coherent and as simple as possible”.

The IPKat says: the easiet way to make copyright law "coherent and simple" is to convert it from a right to restrict the use of a protected work to a mere right to collect revenue in respect of its use. This is however a bit of a non-starter: it undermines the whole concept of droit d'auteur and is definitely not in keeping with the fundamental assumptions which underpin the Berne Convention and TRIPs.

The working paper assesses, in particular, whether any inconsistencies between the different Directives hamper the operation of EU copyright law or damage the balance between rights holders’ interests, those of users and consumers and those of the European economy as a whole.

The working paper concludes that there is no need for root and branch revision of the existing Directives but that fine-tuning is necessary to ensure that definitions – for example of reproduction right - are consistent. Similar updating seems necessary with respect to the exceptions and limitations set out in the different Directives.

The working paper also assesses whether further legislative or other action is needed to ensure the Internal Market functions properly. It concludes that the immediate need for action may be limited to achieving a level playing field on the criteria used to determine the beneficiaries of protection in the field of related rights. In other words, deciding whether it is on the basis of nationality, place of business, first fixation or the first publication that a phonogram producer or a broadcasting organisation from outside EU would be entitled to protection in the EU.
The IPKat says: this really is fine-tuning. Further, these issues are scarcely those that concern users and consumers, to whose needs lip-service has been paid above.

Some rights holders have argued for extending copyright protection for recorded music from 50 years to 95, to bring the EU in line with the US. However, the working document suggests that there is no apparent justification for such a change, given for example that there are no longer trade distortions arising from different terms of protection within the EU’s Internal Market. It also notes that in nearly all other industrialised countries, the relevant period is also 50 years.
The IPKat says: this is the minimum period specified under the Rome Convention and under Article 14.5 of TRIPs. If it were extended to 95 years, it is quite conceivable that the copyright in a sound recording of a musical work would subsist after the 70 years post mortem protection for the composer of the music had expired.The working paper is not an exhaustive presentation of future EU copyright policy. It takes account of discussions with Member States and stakeholders over the last two years, covering in particular the provisions of the Software Directive (91/250/EC), the Rental Right Directive (92/100/EEC), the Term of Protection Directive (93/98/EEC) and the Database Directive (96/9/EC). The full text of the working paper, and details of EU copyright legislation, are available here.

The July issue of Sweet & Maxwell's bimonthly European Copyright and Design Reports has now been published. It contains, among other cases, English translations of the following:

* Vereniging Buma an Stichting Stemra v KaZaA (Netherlands Supreme Court): supplier of peer-to-peer software for exchange of software held not liable for copyright infringements carried out by users of that software; appeal dismissed.

Tuesday, 20 July 2004

Findlaw reports that two Florida bars are engaged in a fight over who has the right to use the name “Sloppy Joe’s”. The original Sloppy Joe’s was run by “Sloppy Joe” Russell, a friend of Ernest Hemmingway, and was regularly frequented by the novelist, though it closed down in 1937. Captain Tony’s Saloon moved into the basement of the city morgue which had housed the original Sloppy Joe’s and began calling itself “the First and Original Sloppy Joe’s 1933-1937”. Meanwhile, Sidney Snelgrove and John Mayer bought the Sloppy Joe’s bar, which had moved down the road. Now Sloppy Joe’s is claiming Captain Tony’s use of the Sloppy Joe’s name infringes its registered trade mark.

“Captain Tony's products are not of Sloppy Joe's quality, and the condition of its premises does not meet Sloppy Joe's standards. As a result, Captain Tony's has sullied Sloppy Joe's distinctive style and decor"

said the suit filed before the Federal Court. No date for the trial has been set.

The IPKat thinks that if the new Sloppy Joe’s succeeds in this suit, there would be no way for Captain Tony’s to describe the way in which its building had been previously used. This would rule out a form of descriptive use of a trade mark.

Things to eat while you’re there here and here More sloppy drinking establishments here and here

* classe 11: « Appareils et installations d’éclairage, diodes électroluminescentes ». The applicants' appeal, apparently on the ground of Article 7(1)(b) of the CTM Regulation (lack of distinctive character), failed. Perhaps one day we poor English will find out why. Meanwhile, our foreign colleagues can confidently advise their US and other non-European associates as to the significance of this decision. What price a level playing field for the provision of legal services in the European Union?, the IPKat asks.nb The Advocate General's Opinion in Case C-106/03 PVedial v OHIM (15 July 2004) remains unavailable in English, but there is some good news: Case T-399/02Eurocermex v OHIM is at last available in English: many thanks, ECJ staff, for translating it!

This from the Telegraph: Marvel Enterprises, the creator of comic book heroes including Spider-Man, The Incredible Hulk and X-Men, is suing The Walt Disney Cofor $55m (£29m). Marvel says it is owed royalties generated from animated television programmes based on the characters that were broadcast on Disney's ABC Family channel in the US. According to a lawsuit filed in a Los Angeles court, Marvel originally reached agreements in the late 1990s for the cartoon characters to be used by Fox Family Worldwide, the US television company. Disney inherited the rights after it bought Fox Family Worldwide in 2001. Marvel alleges that Disney has not kept proper records of royalties due under the agreements. The company also alleges that Disney failed to aggressively market the shows following the renewed popularity of the characters after they were featured in a series of blockbuster Hollywood films in recent years. Marvel finally claims that it is owed money from the licensing of music associated with the television shows.

This lawsuit is just the latest legal controversy to hit Disney. The media giant is also being sued for alleged copyright infringement on the song The Lion Sleeps Tonight, which featured in the Lion King film and musical. That lawsuit alleges the song is based on another song called Mbube ("lion" in Zulu) that was written by a Zulu migrant worker in 1939.

The IPKat wishes someone would make a film about him. Then he too could get in on the action and start suing for colossal sums. He also notes that, with good drafting and meaningful compliance with licence terms, most contract-based disputes can usually be avoided. Marvels here, here and here More royalties here, here and here

Monday, 19 July 2004

It’s obviously awards season. Last Thursday the “branding Oscars” were awarded by Superbrands, the Guardian reports. The 6 main award winners weren’t the cutting edge companies you might expect. Instead, a stable of old favourites walked away with the top prizes: Marks and Spencer, Gillette, British Telecom, Duracell, Heinz and Jaguar. Additionally, awards were presented for best advertising campaign, the brands consumers would most miss if they were no longer around and the brands consumers would most like to work for. The role played by brands was saluted by the organisation, with research revealing that consumers are willing to pay more for well-known brands and will ignore price promotions out of loyalty to their favourite brands.

The IPKat observes that such branding would be impossible without the trade marks that underlie it. He notes that the strongest brand of them all is the Oscars.

The UK’s Department for Culture, Media And Sport has issued a press release announcing a government-led initiative to help the UK's Creative Industries sector. This initiative was launched today by Arts Minister Estelle Morris and Science and Innovation Minister Lord Sainsbury. The new Creative Industries Forum on Intellectual Property is a cross-Government body - including the devolved administrations - and industry, and has its first meeting today. It brings together key players to discuss how to best meet the opportunities and threats that rapid technological developments are generating for the UK's Creative Industries sector. The initiative (says the press release) will build on the sector's £54.8 billion contribution to the UK's economy and maximise its future contribution to UK competitiveness. The Forum will address key issues, such as: * strategies for maximising the opportunities for the Creative Industries in a digital environment
* business models
* education and awareness raising
* challenges such as file-sharing and piracy. The Forum, jointly chaired by Arts Minister Estelle Morris and Lord Sainsbury, includes representatives from across the Creative Industries sector, as well as other stakeholders, including film, music, publishing, design and computer games. It also includes representatives from internet service providers, telecoms companies, hardware manufacturers and consumer groups.

Estelle Morris said:

"A vibrant, diverse creative sector is important to the UK both culturally and economically. Intellectual Property Rights have always been at the heart of our Creative Industries - by encouraging and rewarding creativity. We've listened to the concerns of our Creative Industries and know that these issues matter, which is why we are joining together to work on a way forward."

Lord Sainsbury said:

"Creative Industries play a vital role in the UK's economy and competitiveness and are instrumental in developing and fully utilizing innovative new technologies. It is vital that both Government and industry work together to support this key sector and find ways to maximize the benefit from appropriate Intellectual Property Right protection”.

The initiative has allegedly been warmly welcomed by the industry. The work of the Creative Industries significantly contributes to the economic growth of the country with an increase of 8% per year. The work of the Intellectual Property Rights Forum will represent a significant development in an area crucial to the UK's future competitiveness - it contributes 54.8 billion to the UK economy employing 1.9 million people.
The Creative Industries Forum on Intellectual Property is meeting today at the London College of Communications.

The IPKat is pleased that, after all these years, the UK government has suddenly discovered that intellectual property exists and that it creates wealth. However, all serious initiatives in this area are likely to come from international or EU-wide discussion, not from this seriously parochial Forum. The IPKat wonders if the time of its members wouldn’t be better spent creating wealth (in the case of IP owners) or dissipating it (in the case of consumer groups) than in what is almost certain to be an ineffective and cosmetic exercise.

The July/August issue of Euromoney's Managing Intellectual Propertycontains the MIP 50, described as "2004's most important people". The IPKat rejoices that so many of his friends have been included, though he is still sulking at his omission on the altogether dubious ground that a cat isn't a person.

Friday, 16 July 2004

Today’s guest blogger is Piter deWeerd, an associate with the Dutch law firm NautaDutilh. He brings exciting news of how smells can now be protected by copyright in the Netherlands – read and enjoy:

The commonly held idea that perfumes, recipes and other formulae are the mere sum of their ingredients and are therefore not protected under copyright law was recently rejected by a Dutch court of appeal. In what can be described as an internationally groundbreaking decision, the court ruled, on the basis of physicochemical analysis and the laws of probability, that Lancôme's perfume 'Trésor' was copyright-protected.

Lancôme's lawyer, Professor Charles Gielen, a partner at the Dutch law firm NautaDutilh, succeeded in convincing the court that the blend of ingredients constituted an original work of authorship and that the cheap perfume produced by the defendant could only be classified as nothing more than a deliberate imitation.

This was probably the first time that physicochemical analysis was used in a copyright lawsuit. In this case, the analysis showed that the two perfumes had 24 olfactory components in common and that there were only two components of Trésor that had not been used by the defendant. In addition, the only component that was unique to the defendant's perfume was Gamma Dodecalacton, a cheap substitute for Musk Keton, used in Trésor. The probability of a perfumer other than Lancôme independently and coincidentally creating a perfume containing 24 of the 26 olfactory components of Trésor was shown to be about the same as that of winning the lottery every day over a period of a hundred years.

The Trésor perfume was considered by the court as having an original character bearing the personal imprint of its creator, thus entitling it to copyright protection in the Netherlands. In view of this and the improbability of the resemblance to Trésor being coincidental, the court concluded that the defendant had deliberately and unlawfully infringed Lancôme's copyright.

It should be noted that the court ruled that the copyright protection of a perfume extends only to the scent-generating substance that is bottled and sold on the market. The court stressed that the smell of a perfume is too transient and too variable to be copyrighted.

This case shows that intellectual property law is still open to change and innovation. It is NautaDutilh's belief that thorough legal analysis in combination with sophisticated research methods can lead to solutions that hitherto seemed unthinkable.

The UK Patent Office has issued a new Practice Amendment Notice, PAN 6/04 on territorial and other limitations. The background is this: the purpose of a trade mark's specification is to provide a statement of the goods or services for which it is registered. The Trade Marks Act 1994 provides for specified territorial or other limitations; geographical limitations have in the past been incorrectly included in lists of goods and services, rather than expressly identified as limitations. Therefore, in instances where geographical limitations appear in the statement of goods or services, applicants will be required to delete them and insert them in Box 11 of form TM3.The Notice gives examples of limitations improperly listed in the statement of goods or services:

Pharmaceutical preparations and substances, none being for export, other than to the Republic of Ireland;

Cosmetics and soaps, all for sale in Northern Ireland and Scotland;

Manufactured tobacco, for export from the United Kingdom to Zambia, the Republic of South Africa and Tanzania;

Nightclub services provided in London.

Such limitations should not be included in the statement of goods or services: they go instead in Box 11 of the form TM3. Other types of limitation should still be listed in the statement of goods or services, for example:

Fertilizers for use in the care of house plants;

Pharmaceutical substances for use in treatment of cardiovascular diseases;

Gardening magazines;

Alcoholic beverages, but in so far as whisky and whisky based liqueurs are concerned only Scotch whisky and Scotch whisky based liqueurs produced in Scotland;

Transportation of goods by rail;

Pharmaceutical preparations for supply only on prescription of a registered medical practitioner;

Lubricants, for sale in containers of not less than 20 litres;

Milk and cheese, the produce of Northern Ireland;

Cleaning preparations; preparations for the hair; but not including soaps;

Financial services, but not including banking;

Building materials (not of metal).

This revised practice comes into force on 26 July 2004.

The IPKat, who has a tidy mind, approves the new arrangements and agrees that only those limitations that describe the inherent nature of the goods or services themselves should qualify the extent of protection accorded by the mark's registration.

Thursday, 15 July 2004

Not yet publicly available, but posted on today’s All England Direct subscription-only service (owned by LexisNexis) is the Court of Appeal’s ruling in Lambretta Clothing Co Ltd v Teddy Smith (UK) Ltdand another, case [2004] EWCA Civ 886.
Lambretta designed an article of clothing with a ‘retro-vintage’ theme that recalled the sportswear of the 1970s and early 1980s. The shape itself, including the panelling, of the garment was old and owed nothing to the designer; his contribution had been the choice of colours (blue for the body, red for the arms and white for the zip), the white stripes on the garment and the size and positioning of Lambretta’s logo. Having learnt that what were considered to be copies of the garment were being sold by Teddy Smith, Lambretta brought an action for infringement of unregistered design right (UDR) and/or infringement of artistic copyright. The trial judge held, on the facts, that Teddy Smith’s article had been copied from Lambretta’s design but that, as a matter of law, UDR might not subsist in the design and that there was a defence for infringement of artistic copyright under s 51 of the Copyright, Designs and Patents Act 1988. Lambretta appealed. The Court of Appeal, strengthened by the presence of leading IP judge Lord Justice Jacob, dismissed the appeal.

Mere choice of colourways for a standard track top was not “an aspect of the shape or configuration of an article or part of an article” that would attract design protection and, in any event, the exclusion of ‘surface decoration’ from the scope of UDR protection applied in this case. It was true, but beguilingly simple, to say that the red, blue and white components of Lambretta’s garment were ‘configured’ together. However, in truth, it was the components that had been configured to produce the ultimate complete article: their colour had nothing to do with that configuration.

it was true that the parts of the garment were dyed right through, any realistic and practical construction of the words ‘surface decoration’ had to cover both the case where a surface was covered with a thin layer and where the decoration ran right through the article. To hold otherwise would mean that whether or not UDR could subsist in two different articles which exactly the same outward appearance would depend on how deep the colours went; Parliament could not have intended anything so capricious. It followed that the judge had properly concluded that UDR might not subsist in the design of Lambretta’s article.

(Lord Justice Mance dissenting) The judge had properly held that s 51 barred Lambretta’s claim. Although there was no doubt that the designer’s drawing was a ‘design document’, the fact that ‘surface decoration’ was excluded from the definition of ‘design’ for purposes of s 51 was irrelevant. The colourways were not just colours in the abstract, they were colours applied to shapes. Accordingly neither physically nor conceptually might they exist, except as the shapes of the parts of the article. It followed that the surface decoration on Lambretta’s garment could not subsist on other substrates in the same way as might a picture or logo. Thus if artistic copyright were to be enforced, it would only be enforced in respect of the whole design drawing and that was expressly not allowed by s 51. That conclusion was reinforced by the bizarre oddity that that Lambretta would have a much longer period of protection than if it had a proper UDR, for instance by actually designing a new garment rather than just colouring an old one.

The IPKat notes that the Court of Appeal commented on the new European unregistered design right. Article 3(a) of Council Regulation 6/2002 on Community designs, although not in force at the time when the events in this case occurred and although lasting for a shorter period than British UDR, clearly would cover this case. The Court added that whether the UK still needs its own unregistered design right on top of that provided by the regulation is perhaps also open to question.

STOP PRESS. The full text of the judgment, together with full colour pictures of the Lambretta designs, is now available on BAILII.
Design Museum here; Design Centre here; simple designs here

Today's Opinion of Advocate General Ruiz-Jarabo Colomer in Case C-106/03P Vedial SA v OHIM is now available in French, Spanish, Italian, German and Portuguese. The IPKat assumes it's something to do with Vedial's attempt to block registration of France Distribution's figurative mark containing the word HUBERT as a foodstuff, based on its own earlier registration of the quite different French mark SAINT-HUBERT 41 for various dairy foodsuffs (see CFI decision in Case T-110/01). Nonetheless, an English translation of the Opinion of the court's most controversial Advocate General would be appreciated.

The BBC reports that an action against the original backers of the Napster P2P file-sharing software is going ahead. Although a new copyright-friendly version of Napster has been launched, this action concerns funding of the original site, which shut down in summer 2001 after a series of unfavourable rulings. Yesterday Judge Marilyn Hall Patel decided to allow the action, brought by Universal Music Group and Capitol Records against Hummer Wimbald and Bertelsmann . She pointed out that “courts have long recognised that in certain circumstances, vicarious or contributory liability will be imposed". The claimants argue that the defendants didn’t just stump up the cash; they also maintained hands-on control over the company, making them liable for copyright infringement too. Bertelsmann’s lawyer though has said that the company will continue pushing to have the case dismissed.

The IPKat thinks it’s fair enough for investors to be held liable, but only if they really do know that their money is being used for nefarious purposes and/or they encourage naughtiness on the part of those in whom they invest.

This from Findlaw: Royal Philips Electronics has accused Gillette Co. of violating patents for its electric toothbrush technology. Philips, the Dutch electronics and technology conglomerate, uses the technology in its Sonicare electric toothbrushes, which use microprocessors to direct bristle movement. Boston-based Gillette sells its power toothbrushes under the Oral-B brand.

said a spokesman for Gillette. Philips, who filed the lawsuits in federal district court in Delaware and in the Landesgericht Dusseldorf (Germany), said it received its patent for sonic technology in the United States in 1995 and another in Europe in 2000.

The IPKat assumes that, since US and European patent law remain out of line with each other even after TRIPs, it is necessary for Philips and Gillette to lock horns in both jurisdictions rather than just use one and treat it as a "winner take all".

Reuters reports that a group of media and technology companies, including such big-hitters as Microsoft, Warner Bros, Disney and IBM have agreed in principle that consumers should be legally able to make copies of next-generation DVDs as back-ups and to enable their content to be stored on portable players. This marks a major change in attitude by the film industry, though software and computer companies have been pushing for such a move. However, this is not technically possible yet as a new form of copy-protection, to be called Advances Access Copying System, that will allow selected copying, must be developed and is expected to be available later in the year.

The IPKat notes that this isn’t exactly open season for pirates. It seems that only copying that does not interfere with the basic market for the DVD will be allowed. Moreover, copy protection, albeit of a more discerning type, will remain be in place.

Indulge in a bit of home-copying here More on next generation DVDs here, here and here

Wednesday, 14 July 2004

Another ruling yesterday from the EU's Court of First Instance (CFI) was Case T-115/02 AVEX Inc v Office for Harmonisation in the Internal Market. Avex applied to register as a Community trade mark a figurative sign containing the letter 'a' in relation to class 25 goods (clothing, footwear, headgear, non-Japanese style outwear, coats, sweaters and the like, nightwear, underwear, swimming suits, shirts and the like, socks and stockings, gloves, ties, bandannas, mufflers, hats and caps, shoes and boots, belts, jackets, T-shirts). An opposition, filed by the owner of an earlier figurative mark that also contained the letter 'a' in relation to class 25 goods, succeeded on the basis that, through the similarity of marks and goods, there was a likelihood of confusion. The OHIM Board of Appeal dismissed the appeal, as did the CFI. The only item of note in an otherwise unexceptional decision was the CFI's observation that any view expressed by the Board of Appeal as to the validity of an applicant's trade mark in ex parte proceedings (for example where the applicant is arguing with OHIM over a mark's inherent distinctiveness, see Case R 91/1998-2) is not going to be relevant in proceedings where that mark's similarity to another mark is being considered.

The IPKat sympathises with CTM applicants who get past the hurdle of persuading OHIM that their mark is distinctive, only to find that it is confusingly similar to someone else's earlier mark, but there's no merit in letting such marks on to the register. Money spent litigating these points may be better spent in designing a new mark.

Number of Google hits for the letter "A" today: 3,570,000,000. Time spent finding them: 0.18 seconds
Things that "A" is for here, here and here Things you might not have thought "A" is for here and here

The BBC reports that the House of Lords has rejected the Government’s proposal to abolish the position of Lord Chancellor. The IPKat notes that this means that the position of Lord Chancellor’s Appointed Person (LCAP), who hears appeals from the Patent Office in trade mark matters, is safe for the meantime. The Government still has to decide whether it will go ahead with its dastardly plan, despite the Lords’ objections. Does anyone out there know what is planned for the LCAP if the Government does eventually manage to dispose of the Lord Chancellor?

Tuesday, 13 July 2004

Another interesting case from the ECJ today -- C-429/02Bacardi France SAS v Television Francaise 1 SA and others . Bacardi makes and sells numerous alcoholic beverages in most countries of the world, including Bacardi rum, Martini and Duval pastis. Darmon and Girosport are companies which negotiate on behalf of TF1 for television retransmission rights for football matches. Relying on the alleged fact that Darmon and Girosport put pressure on foreign football clubs to refuse to allow Bacardi’s brand names to appear on advertising hoardings around sports stadia, Bacardi sought an order in the French courts that Darmon, Girosport and TF1 should cease that conduct as being incompatible with Article 59 of the Treaty. After that application was rejected both at first instance and on appeal, Bacardi appealed on a point of law. As it was in doubt as to the compatibility with Community law of the French rules prohibiting television advertising for alcoholic beverages marketed in France, in the case of indirect television advertising resulting from the appearance on screen of hoardings visible during the retransmission of bi-national sporting events taking place in other Member States, the Court of Cassation stayed the proceedings and referred the issue to the ECJ. According to that court's ruling today,

"1. The first sentence of Article 2(2) of Council Directive 89/552 does not preclude a Member State from prohibiting television advertising for alcoholic beverages marketed in that State, in the case of indirect television advertising resulting from the appearance on screen of hoardings visible during the retransmission of bi-national sporting events taking place in the territory of other Member States.

That kind of indirect television advertising is not to be classed as ‘television advertising’ within the meaning of Articles 1(b), 10 and 11 of the directive.

2. Article 59 of the EC Treaty (now, after amendment, Article 49 EC) does not preclude a Member State from prohibiting television advertising for alcoholic beverages marketed in that State, in the case of indirect television advertising resulting from the appearance on screen of hoardings visible during the retransmission of bi-national sporting events taking place in other Member States".

The IPKat notes that, where health and public welfare considerations are involved, brand promotion continues to be of lower priority.

The judgment of the Court of First Instance in Case T-115/03 Samar v OHIM (Grotto), has been posted on the European Court of Justice website today. Unfortunately, this exciting decision -- involving an application to register the word mark GAS STATION and what looks like an opposition involving a figurative mark containing the words BLUE JEANS GAS, is available in just eight of the 20 official languages.

Meanwhile the IPKat's translation watch sadly recalls the unfortunately-named Case T-348/02Quick v OHIM, which is available in only five languages despite having been decided on 27 November 2003. A more promising case is Case T-399/02Eurocermex v OHIM, decided on 29 April 2004 and already available in six languages.

When are "anti-pollution devices for motors and engines" different goods to "anti-pollution devices for motors and engines"? To find out, read one of the most recent batch of Opposition Division decisions to be posted on the OHIM website, Case 2183/2004A-Invest SA v Erland Nilson AB, where Erland Nilson's application to register a figurative mark containing the word ENIT was opposed by A-Invest, who had fortuitously registered the word mark ENIT in Spain just a few months earlier. Since both parties wanted to use their highly similar marks for "anti-pollution devices for motors and engines", things looked grim for Erland Nilson -- but the Opposition Division came to their aid, saying:

"The fact that anti-pollution devices for motors and engines of the CTM are used to improve health, as are the opponent’s goods, does not render these goods similar. It can be seen that the nature of the goods and services in conflict are different as the opponent’s mark covers medicated products whereas the applicant’s marks covers devices and services. Their distribution channels are also different; the opponent’s goods being obtained in chemists’ shops, supermarkets, department stores and gardening shops while the applicant’s services are obtained by consultation and its goods obtained in industrial machinery outlets. Their method of use is also different. The goods of the opponent’s mark are aimed at the general public whereas the goods of the CTM are directed at a more specialised consumer namely machinery users while the services of the CTM are aimed at those requiring information technology support services".

The IPKat is delighted that the Opposition Division looks behind the labels given to goods for classification purposes and sees what they really are. Even so, he can't help wondering whether he wouldn't have been just a teensy-weensy bit confused himself, seeing two different lots of anti-pollution devices branded as ENIT.

Monday, 12 July 2004

A shorty in Friday’s Daily Telegraph reports that Ken Livingstone is in danger of a run-in with the British Copyright Council. A council member has raised the issue of whether the red C in a circle that is the symbol of the Inner London Congestion Charge is too close to the copyright symbol for comfort. However, the secretary of the BCC has said that it’s unlikely that matters will be taken further – “We’ve left it very late to complain, and the congestion charge is only an issue in London” she said.

The IPKat, a staunch pedestrian, is glad this isn’t the end of the road for the congestion charge.

Last week Geoffrey Hobbs QC, sitting as a deputy judge in the High Court, decided Electrocoin v Coinworld , an infringement case based on a number of UK and Community trade marks for the names of various slot machines and the sequence of winning symbols used by those machines. In the process of doing so, a number of important infringement issues were raised including:

1. Trade mark use: After considering BMW v Deenik, Holterhoff, Arsenal v Reed (ECJ and Court of Appeal) and R v Johnstone, he came to the conclusion that the rights conferred by trade mark registration are not affected by use other than for the purposes of distinguishing goods or services. He added that distinguishing goods and services corresponds to the role a trade mark must perform to satisfy Article 2 of Directive 89/104. The point of the infringement legislation is to stop defendants from using signs in a way which would conflict with the use of the sign by the claimant. The IPKat says, despite seemingly clear words to the contrary from the ECJ and the Court of Appeal in Arsenal v Reed, a requirement of trade mark use by the defendant is here to stay.
2. Article 5(2) and similar goods: Article 5(2) of Directive 89/104 states that its protection applies when the parties’ goods are dissimilar. However, recent ECJ judgments have found that it also applies to similar and identical goods. It was conceded in Electrocoin that the infringement provisions of the CTM Regulation had to be read in accordance with this case law, however the situation with regard to UK trade marks was less clear. Although s.10(3) (which corresponds to Article 5(2) of the Directive) has now been amended to take the case law into account, the allegedly infringing acts predated the amendment. It was argued that the pre-amendment s.10(3) could not be read in accordance with the ECJ’s rulings because it involved such a great departure from the express wording of the statute and Article 5(2) on which it is based. Geoffrey Hobbs QC rejected this approach saying he was bound to interpret s.10(3) in accordance with the relevant decisions of the ECJ. The ECJ had made it quite clear in Adidas-Salomon v Fitnessworld that any Member State which implements Article 5(2) must extend its protection to similar and identical goods. The IPKat says no real surprises there.
3. Cross-pollination: According to Geoffrey Hobbs:

“Metaphorically speaking, Article 5(2) provides a remedy for cross-pollination: the mark and sign in issue are identical or similar; use of one is liable to influence the effect of the other on people who have been expose to both; the effect is such that advantage or detriment of the kind proscribed is liable to ensue”.

The mechanism by which this happens is the establishing of a “link” between the claimant’s mark and the defendant’s sign à la Adidas v Fitnessworld. Such a link must have an effect on consumers’ economic behaviour – it’s not enough if the two parties’ marks just bring each other to mind. Geoffrey Hobbs has used this idea of cross-pollination before in a couple of his decisions on registration sitting as the Lord Chancellor’s Appointed Person. The IPKat notes that there’s no such language in the Directive or the CTM Regulation or even in the case law of the ECJ and he’s not entirely comfortable with the idea of English judges inventing seemingly superfluous and ill-defined layers of extra terminology.
4. Defences: Although the ECJ has said that Article 6(1)(b) guarantees defendants the right to use a sign descriptively, rather than as a trade mark, it has also said that the existence of aural confusion between a word mark registered in one Member State and an indication of where a product comes from in another does not automatically lead to the conclusion that the latter use is dishonest. By extension, the confusing use of a denomination can be considered to be in accordance with honest practices, as it was in Reed v Reed. Again, no major surprises here, although the IPKat notes that Geoffrey Hobbs has been a bit coy – he hasn’t come out and explicitly said that use of a mark by a defendant as a trade mark will fall within the Article 6(1)(b) defence.

The BBC reports that ringtones may be the next industry to be hit by piracy. The market for mobile phone ringtones was worth £1.8billion last year and is set to expand. Already many websites exist which offer the tuneful tones without the necessary copyright licences. Although some countries have agreements for the collection of royalties, many don’t. The fear is that piracy will nip this market in the bud.

The IPKat is contemplating a return to communicating via smoke signals.

Friday, 9 July 2004

This from Findlaw: a federal judge has rejected a request by singer Axl Rose to stop an independent record label from releasing an album called "Hollywood Rose: The Roots of Guns N' Roses". Cleopatra Records had purchased the rights to some recordings of Hollywood Rose, which included Axl Rose and Jeffrey "Izzy Stradlin'" Isbell, who later formed Guns N' Roses. Rose, also identified in court documents as William Bruce Bailey, together with other GNR members Saul "Slash" Hudson and Michael "Duff" McKagan objected to the release of the album when they learned of its title.

Cleopatra Records brought the case to court to determine its rights. Rose and the others filed a counterclaim and also sought a preliminary injunction. U.S. District Court Judge Gary Allen Feess denied the request for an injunction by citing the "nominative fair use" doctrine. Federal law allows a person to use another's trade mark

"to identify the trade mark owner's product or service, for the purpose of making a comparison, stating a criticism or establishing a point of reference".

the judge wrote in his ruling. Hollywood Rose lasted for about nine months in the mid-1980s and recorded a demo tape. Former band member Chris Weber, whose parents paid for the demo, sold his rights to the recordings in November 2003 to Cleopatra Records. With Rose as frontman, Guns N' Roses reached superstar status in the late 1980s after the release of "Appetite for Destruction", which includes hits such as "Paradise City", "Sweet Child O' Mine" and "Welcome to the Jungle".

The IPKat, a robust supporter of the doctrine of nominative fair use, wonders why trade mark owners (or their lawyers) so often seem to forget it when they take the trip to court.

Thursday, 8 July 2004

European Court of Justice and Court of First Instance decisions are raining down on us like leaves in autumn. They include a smattering of cases which may be of more than a little interest to IP and commercial lawyers, including:

* Case C-166/03, Commission of the European Communities v French Republic: France in trouble for under Article 28 of the EC Treaty for restricting the circumstances in which gold or gold alloy products can be labelled "gold" or "gold alloy".

* Case C-27/02, Petra Engler v Janus Versand GmbH, Opinion of Advocate General Jacobs regarding the enforcement of a prize competition held by a German company, where the winner lives in Austria.

* Case C-36/03, Approved Prescription Services Ltd v Licensing Authority (acting by the Medicines Control Agency): Opinion of Advocate General Jacobs as to whether an applicant to manufacture Prozac in the UK is entitled to rely upon data previously made available to the agency that grants manufacturing approvals.

* Case T-203/02,The Sunrider Corp. v Office for Harmonisation in the Internal Market: CFI ruling, upholding the examiner and the OHIM Board of Appeal, that the word mark VITAFRUIT was not registrable as a Community trade mark for "herbal and mineral beverages" in Class 32, having been anticipated by an earlier German registration of the same word -- even though very little use had been made of that earlier mark.

* Case T-270/02, MLP Finanzdienstleistungen AG v Office for Harmonisation in the Internal Market: The Court of First Instance agrees that the word mark "bestpartner" is unregistrable as a Community trade mark for a variety of services, being devoid of distinctive character and also being exclusively composed of descriptive terms.

* Case T-289/02,Telepharmacy Solutions Inc. v Office for Harmonisation in the Internal Market: Court of First Instance rules that the word mark TELEPHARMACY SOLUTIONS is unregistrable as a Community trade mark for a variety of goods and services in Classes 9, 10, 38 and 42, being descriptive. The applicant failed to persuade the CFI that the Board of Appeal had deprived it of the right to defend its application by introducing a ground of decision that had not been argued before it.

* Case T-334/01, MFE Marienfelde GmbH v Office for Harmonisation in the Internal Market: Court of First Instance allows the appeal of a CTM applicant to register HIPOVITON for animal food, against the decision to allow an opposition based on the earlier registration of HIPPOVIT for the same goods. This case also turns on the extent to which the opponent's use might be categorised as "genuine".

The IPKat is relieved that, after 20 July, the judges will all be packing their bags and going off on holiday, which means no more IP cases from the ECJ and the CFI before 5 September at the earliest.

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